A Review of the Benson-Flook-Diehr Trilogy: Can the “Subject Matter” Validity of Patent Claims Reciting Mathematical Formulae Be Determined Under 35 U.S.C. Section 112?

Since 1972, the Supreme Court has decided a trilogy of cases on whether inventions claimed [1] at least in part by a mathematical formula [2] can be the proper “subject matter” of a patent. Inventions of this type are referred to hereinafter as “mathematically claimed inventions.” The trilogy of cases which is the focus of this article is: Gottschalk v. Benson (“Benson”) [3]; Parker v. Flook (“Flook”) [4]; and Diamond v. Diehr (“Diehr”) [5]. The issue in each case was nominally cast in terms of whether a mathematically claimed invention constituted subject matter which is eligible for patent protection. Section 101 of the patent statute (“Section 101 “) [6] defines the types of subject matter that are eligible for patent protection. The categories of proper subject matter set forth in Section 101 are extremely broad: any “process, machine, manufacture, or composition of matter.” Almost any mathematically claimed invention can be considered to fall literally within these categories. [7] However, the courts have fashioned an exception to the foregoing categories of proper subject matter for patent. Laws of nature or the like, which arguably characterize mathematical formulae, are deemed outside the scope of Section 101. [8]

The test of whether a mathematically claimed invention is directed to a law of nature is submitted to be a test most difficult of application, due to the vagueness and ambiguity of what constitutes a law of nature [9] and, because of this deficiency, is further submitted to potentially discourage the pursuit of protection on important mathematically-related inventions. [10]

The present article suggests that a much more straightforward test of whether a mathematically claimed invention passes muster under Section 101 is supported in the Supreme Court trilogy in point, i.e., Benson, Flook and Diehr. Specifically, the alternative test is that a claim reciting a mathematical formula meets the requirements of Section 101 in regard to mathematical aspects so long as the scope of the claim is commensurate with the scope of the enabling teaching in the patent specification [11] of how to make and use the claimed invention. An “enabling” teaching or disclosure is a teaching, in accordance with Section 112, of sufficient details of an invention as to “enable any person skilled in the art to which it pertains … to make and use the same….” [12]

The foregoing, alternative test can be restated in terms of a patent law doctrine known as the claim “overbreadth doctrine.” [13] As applied in the context of a mathematically claimed invention, the claim overbreadth doctrine requires that a claim not be broader in scope than the scope of the enabling disclosure for the claim; in other words, overbroad claims are impermissible. [14]

The article first considers claim overbreadth concerns of Section 112 as traditionally applied to areas of technology not involving mathematically claimed inventions. A fundamental policy concern of the overbreadth doctrine is seen to be to promote the progress of the useful arts. The Benson-Flook-Diehr trilogy is then reviewed in light of the claim overbreadth concerns of Section 112. It is observed that each of the trilogy of cases addresses claim overbreadth concerns and reaches a result consonant with the claim overbreadth analysis undertaken. It is further observed that various important aspects of the cases may be more fully understood in light of the overbreadth doctrine. The article lastly reviews lower court decisions that have interpreted the Benson-Flook-Diehr trilogy. It is demonstrated that such lower court cases appear to be unduly limited in their holdings or raise complex issues that would not be raised had the cases been decided on the basis of the overbreadth doctrine.

A. The Repercussions of Overbroad Claims: Frustration of Constitutional Purpose to Promote the Useful Arts

One of the earliest pronouncements by the Supreme Court on the repercussions of permitting claims that are broader in scope than their supporting disclosure was set forth in a case entitled The Incandescent Lamp Patent. [15] The case involved a patent to an incandescent lamp, and more particularly was directed to a lamp filament for use in an incandescent lamp. The inventors in the Incandescent Lamp Patent case had obtained a patent based on the discovery that an incandescent lamp filament could be formed from paper that was carbonized. The inventors, however, claimed their invention in language that was sufficiently broad as to cover any incandescent filament formed from any type of carbonized “fibrous” or “textile” material. [16] The claims, accordingly, included a vast number of embodiments, or species of carbonized fibrous or textile material. Only one of these numerous species was taught in the supporting disclosure in the patent, i.e., that of carbonized paper. Moreover, the disclosure did not teach that the generic category of carbonized “fibrous” or “textile” material would have the requisite properties for an incandescent lamp filament. Indeed, the evidence presented at trial showed that an examination of over six thousand species of carbonized fibrous or textile material revealed that not a single one of these had the requisite properties for implementing an incandescent filament. [17] The Supreme Court held the foregoing broad claims invalid as being in contravention of an earlier, almost identical, counterpart of 35 U.S.C. 112 [18], although a claim limited to carbonized paper was sustained. In invalidating the broad claims, the Court set forth the repercussions that would attend the continuance of such claims:

Under these circumstances, to hold that one who had discovered that a certain fibrous or textile material answered the required purpose, should obtain the right to exclude everybody from the whole domain of fibrous and textile materials, and thereby shut out any further efforts to discover a better specimen of that class than the patentee had employed, would be an unwarranted extension of his monopoly, and operate rather to discourage than to promote invention. [Emphasis added] [19]

The foregoing passage from The Incandescent Lamp Patent case expressly recognizes the deterrence to the progress of technology that attends overbroad claims. To restate the Court’s reasoning in another way, a patentee would be unduly rewarded for the entire field of technology embraced by overbroad claims, whereas his contribution is limited to only a small part of that technology. There would be no reward awaiting others who wished to develop a field of technology beyond the enabling disclosure of the patent teaching, yet included within the scope of the broad claims. The malignancy of overbroad claims is thus that areas of undeveloped and non-enabled technology which are embraced by broad claims are not provided with the stimulus of a patent for their development. This is directly opposed to the express purpose of promoting the “Useful Arts” set forth in the constitutional provision authorizing patents [20]. Thus, overbroad claims are fundamentally defective.

B. How to Avoid Overbroad Claims

There are essentially three ways to avoid an overbroad claim:

(a) restrict the scope of the claim to be commensurate with that of the disclosure;
(b) broaden the scope of the enabling disclosure so as to be commensurate with the scope of the claim; and
(c) a combination of (a) and (b).

To restrict the scope of a claim is essentially a matter of claim draftsmanship, since the claims measure the scope of an invention. [21] Increasing the scope of enabling disclosure, however, typically involves more than mere draftsmanship, because the inventor may be required to perform further tests or further research to provide enablement for other species. [22] While it is considered beyond the scope of the article to detail the various approaches that have been successfully taken in responding to an allegation of an overbroad claim, reference is made to the body of case law on this topic involving the chemical arts. [23] The article is concerned more with a first order approach to the overbreadth doctrine as being at the basis of the Benson-Flook-Diehr trilogy, rather than a second order approach involving the nuances of the doctrine.

II. The Claim Overbreadth Analysis as Applied in Gottschalk v. Benson

A. Insufficiently Restricted Claims

The claims in Gottschalk v. Benson [24] were directed to a procedure for the mathematical conversion of binary-coded decimal numbers into pure binary form. Claim 8 [25] recited a “method of converting signals from binary coded decimal formula to binary” and included such steps as “storing the binary coded decimal signals in a reentrant shift register,” and “shifting the signals to the right by at least three places until there is a binary’ 1′ in the second position of said register. ” Claim 13 [26] recited in the preamble a “data processing method for converting binary coded decimal number representations into pure binary number representations” and included various steps such as “testing each binary digit position ‘1’ beginning with the least significant binary digit position,” and “repeating [the foregoing] step” if “a binary ‘0’ is detected.” The foregoing limitations of the claims in Benson may suggest implementation of the invention solely in a digital computer or other apparatus having “shift registers” or means for “testing each binary digit position ‘1’ ….” The Supreme Court, however, expressly interpreted the claims as not being restricted to use in a digital computer or other apparatus. The Court stated “The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use.” [27]

The disclosure in Benson taught only a simple embodiment for implementing the invention; that is, the use of a digital computer programmed with the disclosed mathematical formula for implementing the conversion of binary-coded decimal numbers into pure binary form. [28] Thus, only the embodiment of a digital computer was “enabled” under Section 112. The Supreme Court was manifestly concerned that the claims at issue were so broad as to cover a vast range of embodiments in addition to the single, enabled embodiment. As the Court noted:

Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure-binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to research in the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus. [29]

From the foregoing passage from Benson, the Supreme Court can be seen to have engaged in a claim overbreadth analysis under 35 U.S.C. 112. Specifically, it is significant that the Court considered:

(a) the breadth of the claims at issue (“[T]he … claim is so abstract and sweeping as to cover…”); and
(b) the breadth of the enabling disclosure (“The end use may be performed through existing machinery [such as the disclosed general purpose digital computer]…”).

The Court then concluded that the scope of the claims was not commensurate with the scope of the enabling disclosure:

The end use may … be performed through any existing machinery or future-devised machinery [which, presumably, is not ‘enabled’] or without any apparatus [Emphasis added].

The Benson court held the claims invalid, nominally basing the decision on Section 101. [30] Accordingly, the foregoing passage from Gottschalk v. Benson provides strong support for the position that the overbreadth doctrine underlies the decision in Benson.

In addition to reaching the same result as under the Section 101 analysis engaged in by the Benson Court, the overbreadth doctrine can be seen to share a fundamental policy concern in common with caselaw relied on in the Benson decision. As discussed above [31], a fundamental policy concern of the overbreadth doctrine is to prevent claims that are so broad as to “operate rather to discourage than to promote invention.” [32] This concern appears to be essentially identical to a fundamental policy concern set forth by the Benson Court most clearly, perhaps, in reference to the cited precedent of O’Reilly v. Morse. [33]

In O’Reilly v. Morse, the inventor Morse had obtained a basic patent on a technique for using electro-magnetism to produce distinguishable signs for telegraphy. Various claims in the patent were upheld as valid in O’Reilly v. Morse, but the eighth claim was denied. The eighth claim was arguably overbroad on its face. It claimed the use of’ ‘electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distance [Emphasis added].” “However developed” is presumably intended to mean whether or not the intelligible signs or characters are “developed” within the scope of enablement of the supporting disclosure. As to the policy concerns that would be violated if the claim were to be upheld, the Court stated:

If this claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in plaintiffs specification. His invention may be less complicated-less liable to get out of order-less expensive in construction, and its operation. But yet, if it is covered by this patent the [future] inventor could not use it, nor the public have the benefit of it without the permission of the patentee. [Emphasis added] [15 How. at 113] [34]

It appears straightforward to infer from the foregoing statement of policy concern that to be required to obtain “the permission of the patentee” would serve to “discourage rather than to promote invention.” [35]

Accordingly, there is support in Gottschalk v. Benson, supra, for the proposition that, not only does the overbreadth doctrine underlie the Benson decision, but that the overbreadth doctrine addresses the same fundamental policy concern as set forth in the Benson decision.

B. How the Overbroad Claims in Benson Might Have Been Avoided

As noted above, the Benson Court was clearly of the opinion that the claims at issue were not restricted to the single, disclosed embodiment of carrying out a mathematical procedure in a general purpose digital computer. [36] If the claims were restricted to the single, disclosed embodiment, the Court may have upheld the validity of the claims. For example, the claims in Benson could have been restricted by specifically reciting a “general purpose digital computer,” and further could have specifically set forth the various portions of the digital computer that are used in performing the mathematical steps involved. The claimed invention would then have been more clearly directed solely to an improved general purpose digital computer, rather than to the more abstract and mathematical technique of converting numbers from one form into another. As such, the claims would have been more clearly in compliance with the overbreadth doctrine and may have been sustained as valid.

III. The Claim Overbreadth Analysis as Applied in Parker V. Flook

A. Immaterial Restrictions in Claims

The patent application considered in Parker v. Flook [37] was directed to a method of updating the value of an “alarm limit” of an operating parameter, or variable, of processes involving the catalytic chemical conversion of hydrocarbons. The claims in Flook recited a mathematical formula from which the alarm limit could be calculated. The Flook claims were restricted to “a process comprising the catalytic chemical conversion of hydrocarbons.” [38] Additionally, the Flook claims contained a recitation of using the solution of the mathematical formula for “[a]djusting said alarm limit to [an] updated alarm limit value. [39]

The Supreme Court in Parker v. Flook engaged in tell-tale aspects of a claim overbreadth analysis. Specifically the Flook Court saw fit to point out the broad range of embodiments covered by the claims:

The patent claims cover any use of respondent’s formula for updating the value of an alarm limit on any process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons. Since there are numerous processes of that kind in the petrochemical and oil refining industries, the claims cover a broad range of potential uses of the [claimed] method. [Footnote omitted] [40]

The Flook court also saw fit to address the scope of the disclosure supporting the claims at issue, and found it to be deficient as lacking various types of information:

The patent application does not purport to explain how to select the appropriate margin of safety, the weighting factor, or any of the other variables [required to practice the invention]. Nor does it purport to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm Iimit. [41]

The foregoing observations of lack of explanatory information or disclosure in the application in Parker v. Flook suggest that a person of ordinary skill in the art would not be ‘enabled’ by the disclosure to practice the invention. Without such enablement, the patent claims would be invalid under Section 112 of the patent statute. [42] One may argue that the application need not have recited the information noted by the Flook Court as lacking from the disclosure on the basis that such information may already be in the possession of one of ordinary skill in the art. [43] However, the applicant in Flook apparently did not have a sufficient opportunity to advance this type of argument, since the claims were not rejected under 35 U.S.C. Section 112, but rather on Section 101 of the Statute.

Accordingly, the claims in Flook, which were acknowledged by the Flook Court as covering a broad range of embodiments, were arguably not even supported by a single, enabled embodiment. Under the overbreadth doctrine, the claims at issue would be invalid under Section 112. The same result was reached by the Flook Court, but on the express basis of Section 101 and case law interpretation of this Section. [44]

B. The Demystification of “Post-Solution” Claim Elements

The Supreme Court in Parker v. Flook [45] made specific holdings in regard to the legal effect of the claim limitations at issue that were directed to a “particular technology” and to so-called “post-solution activity.” In regard to the post-solution activity limitation, the Flook court provided a holding, based on 35 U.S.C. Section 101, which may appear to suggest that “post-solution” claim limitations are categorically ineffective to alter the legal status of a claim such that patent draftsmen should never rely on such limitations:

The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean Theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques. [Footnote omitted; emphasis added] [46]

Similarly, in regard to apparently both the “particular technology” and the “post-solution activity” claim limitations at issue, the Flook court held:

If the foregoing passages from Parker v. Flook are interpreted in isolation from the remainder of the case, then Parker v. Flook may be used to stand for the far-ranging proposition that “particular technology” and “post-solution activity” claim limitations, no matter how restrictive in scope they may be, are of no legal effect in determining the validity of a claim. This view appears to be expressed in at least one lower court decision. [48] However, such a far-ranging interpretation of the foregoing passages from Flook fails to take into account the fact that the claims in Flook were fatally defective as being overbroad or not ‘enabled,’ as discussed above. It is thus suggested that the foregoing passages from Flook may be more meaningfully read as signifying that the particular claim limitations at issue were immaterial or ineffective only because they did not limit the scope of the claims to an enabled embodiment or embodiments.

IV. The Claim Overbreadth Analysis as Applied in Diamond V. Diehr

A. Adequate Restrictions in Claims

The claims in Diamond v. Diehr [49] were directed to a process of curing synthetic rubber. The claims recited a mathematical formula, which was utilized to determine the optimum time for removing cured rubber from a mold. The claims, significantly, further contained various non-mathematical limitations. The Diehr court remarked on the non-mathematical limitations in a passage that clearly evidences a favorable disposition about the scope of the claims at issue:

[Respondents] seek only to foreclose from others the use of [the] equation [recited in the claims] in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. [50]

The disclosure in Diamond v. Diehr presumably provided adequate enabling support commensurate with the claimed process of curing synthetic rubber. There is no language to the contrary in Diamond v. Diehr as there was in Gottschalk v. Benson [51] and Parker v. Flook. [52] Accordingly, the foregoing passage from Diamond v. Diehr, considered with the foregoing presumption regarding adequate scope of enablement, illustrates that the Diehr case may be read as being based on the overbreadth doctrine. It is not surprising, then, that the Diehr Court affirmed the validity of the claims; [53] the decision being expressly based, however on 35 U.S.C. Section 101, rather than 35 U.S.C. Section 112. [54] The Patent Office subsequently issued a patent to Diehr on his application.[55]

B. Extension of Diehr to Non-Manufacturing Inventions

The invention in Diamond v. Diehr [56] involved a manufacturing process for the precision curing of synthetic rubber. The Diehr court found that the rubber curing process bore the necessary characteristics to fall within the scope of “patentable” processes, set forth by the Diehr Court as follows:

Transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines. [57]

The question arises, then, whether Diamond v. Diehr can be extended to cover non-manufacturing inventions employing a mathematical formula, such as those related to seismic exploration of the earth or non-invasive scanning of internal parts of the human body. Subsequent lower court decisions have answered the question in the affirmative in certain circumstances. [58] The overbreadth doctrine, on the other hand, readily and simply answers the question in the affirmative. Under the overbreadth doctrine, it matters not whether an invention may be constructed as directed to a “manufacturing” process or not; what matters is that the scope of a claim be commensurate with the scope of its enabling disclosure.

V. Lower Court Progeny of Benson-Flook-Diehr Trilogy

The Court of Customs and Patent Appeals has had three opportunities to apply the Benson-Flook-Diehr trilogy. In the first two cases, In re Taner [59] and In re Abele, [60] the C.C.P.A. found as valid under Section 101 non-manufacturing claims respectively directed to a seismic exploration process and a CAT-scan process. In the third case, In re Meyer, [61] the C.C.P.A. reached a contrary result regarding a process for “identifying locations of a probable malfunction in a complex system.” A brief review of these cases illustrates that while the cases appear to be correctly decided according to the overbreadth doctrine, the holdings of these cases appear unduly limited or raise complex questions that would have been avoided if the cases had been decided on the basis of the overbreadth doctrine.

A. In re Taner: Holding Narrowly Limited to “Conversion” of Signals

In re Taner [62] involved claims directed to a method of seismic exploration of the earth. The claims recited such steps as “imparting … spherical seismic energy waves into the earth,” “generating … a plurality of reflection signals in response to the seismic energy waves,” and “summing the reflection signals to form for the source position a signal simulating the reflection response of the earth [to waves of a different form]. ” [63] The Court In re Taner gave considerable weight to the foregoing recitation of “simulating” one type of seismic signal from another, and held as follows in regard to the claims at Issue:

Appellants’ claimed process involves the taking of substantially spherical seismic signals obtained in conventional seismic exploration and converting (“simulating from”) those signals into another form, i.e. into a form representing the earth’s response to cylindrical or plane waves. Thus the claims set forth a process and are statutory within [Section] 101. [Emphasis in original] [64]

The holding in In re Taner is thus predicated on the claims defining a “conversion” of one type of signal into another type. While this is a logical extension of similar language in Diamond v. Diehr, [65] the holding in In re Taner appears to be narrowly restricted to the situation wherein the claims define a conversion of a signal from one type to another. This holding would naturally prompt patent draftsmen· to phrase their claims so as to meet the holding of In re Taner, regardless of whether the resulting claims would best define the metes and bounds of the invention.

On the other hand, if In re Taner had been decided on the basis of the claim overbreadth doctrine, emphasis would have been placed upon the scope-restricting effect of the various claim elements, and upon the breadth of the enabling disclosure. It would matter not per se whether the claims define a “conversion of signals from one form to another.” The decision would then have been based upon the broad ground that the claims were or were not overbroad, [66] and a great amount of emphasis would not have been placed on whether the claims defined some form of signal “conversion.” Patent draftsmen may be more productively engaged in promoting the useful arts by expending their energies to limit the scope of claims, or increasing the scope of enabling disclosure, rather than trying to concoct a definition of signal “conversion” that may not be appropriate to the cases they work on.

In regard to whether the overbreadth doctrine would arrive at the same result as reached by the Court in In re Taner, supra, a review of the opinion in In re Taner suggests that this is the case. The claims in this case were presumably restricted to a process for seismic exploration of the earth, since they included recitations such as: “imparting . . . . spherical seismic energy waves into the earth” and “generating a plurality of reflection signals in response to the seismic energy waves.” [67] The supporting disclosure was presumably enabling as to the claimed method of seismic exploration; non-enablement was not an issue in the case. However, the Court in In re Taner did not pass on the foregoing issues of the scope of the claims at issue and the scope of their enabling disclosure; thus it would be speculative to conclude either way on whether the Court would have reached the same result under the overbreadth doctrine.

B. In Re Abele: Raises the Question of What is Otherwise “Statutory Subject Matter”

The claims in In re Abele, [68] were directed to an improvement in CAT scans (known technically as Computerized Axial Tomography). Claims 5 and 6, which were respectively held invalid and valid are reproduced below in their entireties due to their relative simplicity and brevity. The claims read as follows, with emphasis added to language on which the Court’s decision turned:

5. A method of displaying data in a field comprising the steps of: calculating the difference between the local value of the data at a data point in the field and the average of the data in a region of the field which surrounds said point for each point in said field, and displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.

6. The method of claim 5, wherein said data is X-ray attenuation data produced in a two-dimensional field by a computer tomography scanner. [Emphasis added] [69]

Claim 5 was held invalid because the recitation of “displaying the value of said difference as a signed gray scale” was considered to be directed solely to the mathematical algorithm portion of appellants’ invention. [70] On the other hand, claim 6 was held to be valid because it defined “manifestly statutory subject matter.” [71] This was because the claim was viewed as defining a conventional CAT-Scan process. The Court noted that the claimed feature of “X-ray attenuation data” was elaborated on in the specification as requiring “an X-ray beam [which] is produced by a CAT scanner, passed through an object, and detected upon its exit.” [72] Accordingly, the Court was of the view that the production, detection, and display steps are “manifestly statutory subject matter” and the Court pointed out that it was not “swayed from this conclusion” by the presence of an algorithm in the claimed method. [73]

While the Court’s contrasting treatment of claims 5 and 6 in In re Abele clarifies the application of the Benson-Flook-Diehr trilogy upon which law it is based, it raises the additional issues of what technologies are considered “manifestly statutory” without regard to an algorithm which is recited. Had In re Abele been decided on the basis of the overbreadth doctrine, the holding would not have raised the foregoing issue, but would instead be based on the concern of whether the scope of the claims was commensurate with the scope of the enabling disclosure. The practitioner’s attention would be drawn to these fundamental concerns [74] and he or she would not need to speculate on whether the technology at issue meets the “manifestly statutory” criteria emphasized in In re Abele. It is submitted that, in some technologies, and by definition, in “new” technologies, this issue is far from clear. [75]

As to whether application of the overbreadth doctrine would arrive at the same result as the Court reached in In re Abele, even a cursory consideration of claim 5, reciting the display of “said difference as a signed gray scale,” reveals that such claim is extremely broad in scope and could apply to many technologies. As such, the scope of claim 5 may well be broader than the scope of the enabling disclosure. In contrast, claim 6 appears to be restricted in scope to a CAT-scan process, and so long as the supporting disclosure provides commensurate enabling support, claim 6 would meet the criteria of the overbreadth doctrine. These conclusions are speculative, of course, since the court in In re Abele made its decision without regard to the claim overbreadth aspects of the Benson-Flook-Diehr trilogy, and thus failed to pass on the foregoing issues.

C. In re Meyer: Raises Complex Questions

The claims in In re Meyer [76] were directed to a “process for identifying locations of probable malfunction in a complex system” and recited an algorithm for achieving this stated purpose. The claimed process included such steps as “selecting a plurality of elements in the complex system, said elements having known locations,” “initializing a factor associated with each of said elements,” and “testing the more complex system for a response….” [77] The claims were characterized by the ·Patent Office Solicitor, without objection, as a “diagnostic” or “memory” aid for a physician “when performing a diagnosis to store and to accumulate test responses obtained by [a] standard process of elimination and to narrow the neurological area of possible malfunction. ” [78] The applicant, in fact, admitted at oral hearing that the mathematical algorithm in the claims represents a “mental” process that a neurologist would follow. [79]

The Meyer court framed the issue of whether the claims were valid in terms of whether the process included “otherwise statutory” subject matter. Thus the Court noted:

[T]he decisive question is whether that mental process is applied to physical elements or process steps in an otherwise statutory process, machine, manufacture, or composition of matter in accordance with 35 USC 101. [80]

Without reference to the scope of the claims or to the scope of the enabling disclosure, the Meyer Court held that:

[A]ppeliants’ independent claims are to a mathematical algorithm representing a mental process that has not been applied to physical elements or process steps and is, therefore, not limited to any otherwise statutory process, machine, manufacture, or composition of matter. [81]

The holding in In re Meyer thus raises two questions: First, whether the claim recites an algorithm which may be construed as representing a “mental process,” and second, whether the claim, absent the “mental process,” defines “otherwise statutory” subject matter. Practitioners are thus confronted with expending their energies to answer these questions, which have historically been in dispute in various technologies,[82] rather than attending to such concerns as whether the claims are limited in scope so as to be commensurate in scope with the enabling disclosure, and whether the scope of the enabling disclosure should be increased. These are basic concerns that are related to the constitutional purpose of the patent laws “[t]o promote the progress of . . . . useful arts.” [83]

As to whether In re Meyer would have reached the same result if decided on the basis of the overbreadth doctrine, this would presumably be the case. The claims are broad in scope in that they cover virtually any “complex system” without regard to whether such systems have been fully analyzed and developed in such a way that a person of ordinary skill in the art could perform the claimed steps of, for example:

(a) selecting a plurality of elements in the complex system, said elements having known locations;
(b) initializing a factor associated with each of said elements;
(c) testing the complex system for a response, which response, if effective, requires proper functioning of certain said elements…[84]

Thus, the scope of the enabling disclosure in In re Meyer is likely to be vastly superseded by the scope of the claims. This would be valuable for a practitioner to know, so that he could direct his or her efforts to limit the claims or increase the enabling disclosure. However, without having dealt with these claim overbreadth concerns, the decision in In re Meyer directs practitioners instead to query about the nature of “mental processes” and “otherwise statutory” subject matter. It is submitted that the practitioner’s attention is more usefully directed to claim overbreadth concerns so as to assure that the public is fully taught that which a patentee claims while not limiting the reach of the patent system to old (i.e. “otherwise statutory”) technologies.

Conclusion

It is demonstrated in the present article that the Benson-Flook-Diehr trilogy of cases [85] can be read as being based on the overbreadth doctrine, which in turn is based on 35 U.S.C. 112. [86] This is wholly apart from the analysis under 35 U.S.C. 101 which is also contained in the trilogy. Lower court cases interpreting the trilogy demonstrate that, while apparently reaching the same results as the overbreadth doctrine would reach, the holdings of such cases appear unduly limited or raise complex questions that would not be reached if the cases had been decided under the overbreadth doctrine. By recognizing that the overbreadth doctrine harmonizes the Benson-Flook-Diehr trilogy of cases, practitioners may accordingly advise their inventor-clients that so long as they abide by the precepts of the overbreadth “doctrine, i.e., in providing enabling disclosure that is commensurate in scope with their claims, or by limiting their claims to the scope of the enabling disclosure, they can obtain patents on inventions claimed in part by mathematical formula. [87] This is without regard to whether the inventions have traditionally been considered statutory subject matter, [88] and, for a method claim, without regard to whether the claim is drafted in terms similar to the traditionally-permissible language of “transformation and reduction of an article ‘to a different state or thing.” [89]

[1] Inventions are defined in a patent by a “claim,” which, according to 35 U.S.C. 112, must “particularly [point] out and distinctly [claim] the subject matter which the applicant regards as his invention.”

[8] E.g., Gottschalk v. Benson, supra note 3, 409 U.S. at 67, 175 U.S.P.Q. at 675 (“Phenomena of nature, though just discovered, mental processes, abstract intellectual concepts are not patentable … “); Parker v. Flook, supra note 4, 437 U.S. at 589; 198 U.S.P.Q. at 197 (“Benson applied the established rule that a law of nature cannot be the subject of a patent”); Diamond v. Diehr, supra note 5, 450 U.S. at 186,209 U.S.P.Q. at 8 (“[A]n algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent”).

[9] Perhaps one of the most concise explanations of the “law of nature” test and its shortcomings is found in Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127,76 U.S.P.Q. 280 (1948). At issue in Funk Bros. was whether a patent could issue on a claim to a combination of bacteria having certain desired qualities. The majority opinion found that the claims were not patentable on the basis of a “law of nature” analysis. The majority reasoned:

Their qualities are the work of nature. Those qualities are of course not patentable. For patents cannot issue for the discovery of the phenomena of nature. See Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367. The qualities of those bacteria. like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. [Emphasis added] 333 U.S. at 130, 76 U.S.P.Q. at 281.

In a concurring opinion, Justice Frankfurter reasoned, apart from the law of nature test, that the claim at issue was defective for other reasons. Briefly, this was because the particular combinations of bacteria exhibiting the desired qualities “are not identified” in the claims; rather the claims merely recited the desired qualities of a combination. If such claims were to be sustained, Justice Frankfurter reasoned, then the claims, perniciously, would cover combinations of bacteria that may be “quite different” from the combinations that were taught in the patent application. With regard to the law of nature analysis undertaken by the majority, Justice Frankfurter reasoned:

It only confuses the issue, however, to introduce such terms as “the work of nature” and the “laws of nature.” For these are vague and malleable terms infected with too much ambiguity and equivocation. Everything that happens may be deemed “the work of nature,” and any patentable composite exemplifies in its properties “the laws of nature.” Arguments drawn from such terms for ascertaining patentability could fairly be employed to challenge almost every patent. On the other hand, the suggestion that “if there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end” may readily validate Bond’s claim. [Emphasis added] 333 U.S. at 134-135; 76 U.S.P.Q. at 283.

[10] The public media supports this view. For example, as reported in J. Gleick, “Breakthroughs in Problem Solving,” New York Times, November 19,1984, page I, column 3, a Bell Laboratories mathematician discovered a mathematical algorithm which was a “startling theoretical breakthrough,” having widespread application in business and industry. Despite the clear commercial importance of the discovery, the New York Times article, in addressing patent protection, gave no indication that inventions utilizing the mathematical formula could be patented, but merely made the oblique remark that: “An algorithm cannot be patented….” A subsequent discussion with Robert O. Nimtz, Esq., patent attorney for Bell Laboratories, revealed, however, that patent protection is, in fact, being sought by Bell Laboratories on inventions utilizing the mathematical discovery. As of August 1986 the U.S. Patent Office had not made a decision on whether it would contest the application as claiming impermissible subject matter under 35 U.S.C. 101, according to Mr. Nimtz.

[11] A “patent specification” is the written part of a patent or application for patent that describes how to make and use the claimed invention, and is a requisite for a patent, according to 35 U.S.C. 112.

[13] The claim “overbreadth” doctrine, also referred to as the “undue breadth” doctrine, has been clarified by the Court of Appeals for the Federal Circuit as being based on the enablement requirement of 35 U.S.C. 112. In re Hyatt, 708 F.2d 712, 714, 218 U.S.P.Q. 195, 197 (Fed. Cir. 1983); see In re Borkowski, 442 F.2d 904, 909, 164 U.S.P.Q. 642, 645-646 (CCPA 1970).

[14] This reading of the claim overbreadth doctrine is supported by the case law discussed in Section I, infra.

[18] Revised Statutes Section 4888, relied on in The Incandescent Lamp Patent, supra note 15, required that an application contain a written description of the invention and of the manner and process of making it and using it “in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it appertains …. to make, construct, compound and use the same.” Compare text accompanying supra note 12.

[22] In the chemical arts, the need for further research is often expressed in the requirement for providing in the disclosure a sufficient number of examples of various species covered by a generic claim to provide a reasonable basis for concluding that all species within the generic are enabled. In re Cavalitto, 282 F.2d 357, 361, 127 U.S.P.Q. 202, 205 (CCPA 1960); see In re Fisher, 427 F.2d 833, 839, 166 U.S.P.Q. 18, 24 (CCPA 1970); see generally I Horwitz, Patent Office Rules and Practice. Section 71.7; and E.C. Waltersheid, “Insufficient Disclosure Rejections (Part V),” 62 J.P.O.S. 387 (1980).

[43] For example, information about the “chemical processes” at work might be considered to be within the purview of one of ordinary skill in the art. It is settled law that a patent specification need not disclose what is well known in the art. E.q., Lindemann Maschinenfabrik GmbH v. Am. Hoist and Derrick, id., and In re Meyers, 410 F.2d 420, 424,161 V.S.P.Q. 668, 671 (CCPA 1969).

[48] The Court of Customs and Patent Appeals interpreted Parker v. Flook, supra, note 4, in a very broad fashion and apparently with no weight given to a post-solution step in In re Walter, 618 F.2d 758,205 U.S.P.Q. 397, 409 (CCPA 1980). Specifically, the Court in In re Walter held that: “The specific end use recited in the preamble does not save the claims from the holding in Flook, since they are drawn to methods of calculation, albeit improved.” [Emphasis added]

[65] Supra note 5, 450 U.S. at 184,209 U.S.P.Q. at 7, wherein the Supreme Court approvingly quoted as follows from Cochrane v. Deener, 94 U.S. 780 at 787-788 (1876): Transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines.

[75] Indeed, query whether seismographic exploration of the earth is “manifestly statutory.” In re Walter, supra note 48, seems to suggest a negative answer, while In re Taner, supra note 51, also concerning seismographic exploration, seems to suggest an affirmative answer. Also consider claims that may be characterized as involving “mental steps.” In re Prater, 415 F.2d 1378,159 U.S.P.Q. 583 (1983), mod’d. on rehearing, 415 F.2d 1393, 162 U.S.P.Q. 541, (CCPA 1969) and In re Musgrave, 431 F.2d 882, 167 U.S.P.Q. 280 (CCPA 1970) provide support for the proposition that so long as a claimed invention could be carried out without mental operations, it qualifies as statutory subject matter. Support for the contrary position is provided by In re Meyer, supra note 2, which held invalid claims reciting a mathematical algorithm which “represents a mental process that a neurologist should follow,” 688 F.2d at 795-796,215 U.S.P.Q. at 198.